USPTO Patents Application 09762733

United States Patent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark OfTicc
Addicss: COMMISSIONER FOR PATENTS
P.O. Box 1450

Alcximdria, ViT]ginia 2231 3-1450
www.uspto.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

09/762,733

04/05/2001

29177 7590 03/10/2005

BELL, BOYD & LLOYD, LLC
P. O. BOX 1135
CHICAGO, IL 60690-1135

Michael Bcnz

11270-166

8572

EXAMINER

D AGOSTA. STEPHEN M

ART UNIT

PAPER NUMBER

2683

DATE MAILED: 03/10/2005

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 10/03)

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Application No.

09/762.733

Appllcant(s)

BENZ ETAL

Examiner

Stephen IVI. D'Agosta

Art Unit

2683

" The MAILING DATE of this communication appears on the cover sheet with the correspondence address -
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 .1 36(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 1 33).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent tenm adjustment. See 37 CFR 1 .704(b).

Status

1 )S Responsive to connmunication(s) filed on 04 July 2004 .
2a)[3 This action is FINAL. 2b)0 This action is non-final.

3) n Since this application is in condition for allowance except for fornnal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 1 1 , 453 O.G. 213.

Disposition of Claims

4) S Claim(s) 11-20 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) D Claim{s) is/are allowed.

6) [3 Claim(s) 11-20 is/are rejected.

Claim(s) is/are objected to.

8) n Claim(s) are subject to restriction and/or election requirement.

Application Papers

9) 0 The specification is objected to by the Examiner.

10) 0 The drawing(s) filed on is/are: a)^ accepted or b)0 objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a).
Replacement drawing sheet(s) including the correction is required if the drawing(s) Is objected to. See 37 CFR 1 .121 (d).

1 1) 0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.

Priority under 35 U.S.C. § 119

12) 0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
a)n All b)n Some * c)^ None of:

1 Certified copies of the priority documents have been received.

20 Certified copies of the priority documents have been received in Application No. .

3.n Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Attachment(s)

1) □ Notice of References Cited (PTO-892)

2) n Notice of Draftsperson*s Patent Drawing Review (PTO-948)

3) ^ Information Disclosure Statement{s) (PTO-1449 or PTO/SB/08)

Paper No(s)/Mail Date 7/04 .

4) □ Interview Summary (PTO-413)

Paper No(s)/Mail Date. .

5) CH Notice of Infomnal Patent Application (PTO-152)

6) □ Other: .

U.S. Patent and Tradenrark Office
PTOL-326 (Rev. 1-04)

Office Action Summary

Part of Paper No./Mail Date 03012005

Application/Control Number: 09/762,733 Page 2

Art Unit: 2683

DETAILED ACTION
Response to Arguments

Applicant's arguments filed 7-4-04 have been fully considered but they are
not persuasive.

1 . The examiner appreciates the re-mailing of the IDS. It has now been
signed. The applicant's response regarding priority overcomes the examiner's
objection.

2. The applicant argues that for claims 1 1 and 20 Yamada does not

teach:

" Evaluating a resultant history of the operating state to determine the

operability of the observed radio channel. The cited section of Yamada allegedly
teaching this feature (i.e., col. 3, 1 1. 31-41) does not, in fact, teach this element. Rather,
this section, and the immediately preceding text in column 3 of Yamada, discloses a
methodology used when searching channels with a cellular scanner (CS) and, in
particular, repeatedly monitoring received strength indicators (RSSI) of channels in a
cellular mobile telephone system (CMTS) with the CS. Since a voice channel of the
CMTS is transmitted only during speech communication, there is a high possibiUty of
non-detection. (See col. 3, 1 1. 36-38). Accordingly, the disclosed methodology proposes
simply monitoring for a long period of time to ensure detection. This teaching fails,
however, to teach or suggest an evaluation of the history of an actual operating state.
Furthermore, this teaching does not teach or suggest determining an operability of the
monitored channel based on the evaluated history of the operating state. ..."

The examiner disagrees. Firstly, the applicant is interpreting Yamada
based on their statement that "there is a high possibility of non-detection". There
is nothing in the claims that render Yamada's teachings as incorrect based on
the columns/lines referenced by the examiner, hence the rejection is upheld.

As background, Yamada's invention is directed toward monitoring a use-
status of a radio channel and selecting idle channels for allocation (C1, L38-51).

Application/Control Number: 09/762,733
Art Unit: 2683

Page 3

This clearly reads on the applicant's independent claims. The examiner relied on
C2, L59-66, C3, L1-10 and C3, L33-41 to teach evaluating a resultant history of
the operating state to determine operability since C2, L59-66 teaches "monitoring
the use status of the channels of the CMTS at the location is installed in the MCS
to search idling channels at the location". Taking this into account, a review of
C3, L1-10 finds that Yamada searches for idle channels, and C3, L33-41 finds
that one can search (eg. for a length of time) to detect which channel(s) are idle.
Hence the examiner is not swayed since Yamada's teachings broadly read on
the applicant's claims. Lastly, the concept of "monitoring for a length of time"
(per steps 1-4, C3, L20-32 along with C3, L33-41) teaches monitoring and
evaluating the data (eg. history) to determine what channels may be idle.
4. The previous rejection is included for information purposes only.

Claim Rejections - 35 USC § 102

The following is a quotation of the appropriate paragraphs of 35
U.S.C. 1 02 that form the basis for the rejections under this section made in this
Office action:

A person shall be entitled to a patent unless -

(b) the invention was patented or described in a printed publication in this or a foreign country or in
public use or on sale in this country, more than one year prior to the date of application for patent in
the United States.

Claims 11. 13-14, 16, 18-20 rejected under 35 U.S.C. 102(b) as being
anticipated by Yamada et al. US 5,483,666 (hereafter Yamada).

As per claim 11 and 20, Yamada teaches a method for determining
operability of at least one radio channel in a mobile radio communication system
(title), the method comprising the steps of:

Observing at least one radio channel as an observed radio channel (C2,
L59-66)

Application/Control Number: 09/762,733 Page 4

Art Unit: 2683

Establishing an operating state of the observed radio channel at least one
of continuously in time and repeatedly over a number of successive frames (C3,
LMOand L20-33)

Evaluating a resultant history of the operating state to determine the
operability of the observed radio channel (C3, L33-41).

As per claim 13, Yamada teaches claim 1 1 further comprising determining
a measured value characteristic of the operating state of the observed radio
channel during the step of establishing the operating state (C3, L1-33 teaches
measuring RSSi).

As per claim 14, Yamada teaches claim 13 comprising determining
whether the measured value has one of reache3d, exceeded or undershot a
predetermined limit value in a period of observation during the step of evaluating
the resultant history (C3, L25-30 and/or C3, L41-46).

As per claim 16, Yamada teaches claim 1 1 further comprising:
Establishing the respective operating state of a plurality of observed radio

channels (C3, L19-22)

Determining a correlation of a development of the operating state of at

least some of the observed radio channels with time during the step of evaluating

the resultant history (C3, L25-30).

As per claim 18, Yamada teaches claim 1 1 comprising the steps of:
Establishing repeatedly a measure of the operating state
Storing a corresponding value in a data field of a data memory for storing
a development of the operating state with time (C3, L1-46).

Application/Control Number: 09/762,733
Art Unit: 2683

Page 5

As per claim 19, Yamada teaches claim 1 1 wherein the channels are
physical channels of a TDMA/FDMA system (C1 , L5-10 teaches cellular mobile
telephone system which is interpreted as TDMA/FDMA) and the operating state
of each available radio channel is one of know and established by observing the
at least on observed radio channel (C3, L1-46).

As per claim 20, Yamada teaches a transmission station (figures 1 , 3 and
7) for determining operability of at least one radio channel in a mobile radio
communication system (title), the method comprising the steps of:

Observing at least one radio channel as an observed radio channel (C2,
L59-66)

Establishing an operating state of the observed radio channel at least one
of continuously in time and repeatedly over a number of successive frames (C3,
L1-10and L20-33)

Evaluating a resultant history of the operating state to determine the
operability of the observed radio channel (C3, L33-41).

Also note that Yamada teaches receiving device/station(s) (figure 1 shows
Mobile, #4, BTS #3 and MTSO #2), storage device for storing history values
(figure 3, #38) and an evaluation device (Cellular Scanner, #7 which measures
RSSI and determines channel operability, C3, L20-33. The fixed station
connected to the Control Unit, #5 also operates similarly, C5, L41 to C7, L30).

Application/Control Number: 09/762,733 Page 6

Art Unit: 2683

Claim Rejections - 35 USC § 103

The following is a quotation of 35 U.S.C. 103(a) which forms the basis for
all obviousness rejections set forth in this Office action:

(a) A patent may not be obtained though the invention is not identically disclosed or described
as set forth in section 102 of this title, if the differences between the subject matter sought to
be patented and the prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill in the art to which
said subject matter pertains. Patentability shall not be negatived by the manner in which the
invention was made.

Claims 12 and 15 rejected under 35 U.S.C. 103(a) as being unpatentable
over Yamada as applied to claim 1 1 and further in view of Wang et al. US
5,471,671 (hereafter Wang).

As per claim 12, Yamada teaches claim 1 1 but is silent on further
comprising determining a mean value of the operating state over a period of
observation during the step of evaluating the resultant history.

Wang teaches a successful event on a channel has occurred (i.e., a call
on the channel is finished successfully), the success event counter, N.sub.s, for
that channel is incremented by one and the Margin for that channel is updated.
Previous proposals for using a channel with a measured Margin use an
instantaneous value for the Margin which is only updated when needed, i.e., at
the call setup stage. The method of the present invention, though, updates the
Margin after each successful completion of a call, thereby utilizing a more
meaningful Margin based on the history of the channel . The Margin being
updated after each successful call realizes a mean Margin value which
advantageously improves the concept of Margin over the prior instantaneous
margin measurement. Also, the margin value after a successful call is a truer
measurement of channel Margin than the margin measured at call connection
setup {C7, L26-42).

It would have been obvious to one skilled in the art at the time of the
invention to modify Yamada, such that a mean value is used, to provide for an
average value to be used which provides a more optimal (eg. smoother) value
than an instantaneous number.

Application/Control Number: 09/762,733 Page 7

Art Unit: 2683

As per claim 15, Yamada teaches claim 13 but is silent on wherein
wherein a short-time fluctuation of the measured value remains unconsidered in
the step of evaluating the resultant history.

Wang teaches a successful event on a channel has occurred (i.e., a call
on the channel is finished successfully), the success event counter, N.sub.s, for
that channel is incremented by one and the Margin for that channel is updated.
Previous proposals for using a channel with a measured Margin use an
instantaneous value for the Margin which is only updated when needed, i.e., at
the call setup stage. The method of the present invention, though, updates the
Margin after each successful completion of a call, thereby utilizing a more
meaningful Margin based on the historv of the channel . The Margin being
updated after each successful call realizes a mean Margin value which
advantageously improves the concept of Margin over the prior instantaneous
margin measurement. Also, the margin value after a successful call is a truer
measurement of channel Margin than the margin measured at call connection
setup (C7, L26-42).

The examiner notes that the use of a history (Yamada, C3, L33-41) and/or
a mean/average value as taught by Wang would also lead one skilled in the art to
NOT use short-term fluctuations since they will skew the data and hence should
not be used.

It would have been obvious to one skilled in the art at the time of the
invention to modify Yamada, such that short-term fluctuations are not used, to
provide for using only longer-term data and not short-term fluctuations which can
result in erroneous data being factored in (eg. if a rain storm occurs for an hour,
that timeframe may have non-optimal RF communications and should not be
considered).

Application/Control Number: 09/762,733 Page 8

Art Unit: 2683

Claims 17 rejected under 35 U.S.C. 103(a) as being unpatentable over
Yamada and further in view of Sehier et aL US 5,548,618 (hereafter Sehier).

As per claim 17, Yamada teaches claim 16 wherein radio channels are
physical channels of a TDMA system (CI , L5-10 teaches cellular mobile
telephone system which is interpreted as TDMA) is established from the
correlation of the development of observed radio channels of a same radio
frequency with time (C3, LI -46) but is silent on a temporal drift of a radio
channel.

Sehier teaches in tracking mode, the energy detection applies to the first
N samples in the search window. This search window is opened approximately
halfway through the timing recovery word RR to allow for temporal drift (C8, L38-
48).

The examiner also notes, but does not cite , Massetti who teaches the
central office has a clock that is regularly re-synchronized with a national time
standard 90. In the U.S., for example, the clock 88 may be synchronized by the
time signal which is broadcast by NIST over radio station WWVB. A clock 92 in
the local home unit computer 82 may be, as is also known in the art, re-
synchronized by use of the clock 88 in the central office 84 during each data
collection telephone call between the central office 84 and the local home unit
computer 82. Although it is known, as taught by Waechter et al in U.S. Pat. No.
4,943,963, to synchronize other portions of the in-home television tuning
measurement system 10, such as the timing devices 50, 54, 58, 66, and 70 of
the corresponding local code inserters 44, 46, 48, 62, and 64, and timing devices
in the decoders 76, 78, and 78, to the clock 92 in the local home unit computer
82, it may be preferable to allow one or more of these other portions of the in-
home television tuning measurement system 10 to run freely (i.e., without regular
re-synchronization) and to use one of the clocks 88 and 92, which are regularly
re-set, to track whatever temporal drift may occur in each such free running other
portions (CIO, LI 7-37).

Application/Control Number: 09/762,733

Page 9

Art Unit: 2683

It would have been obvious to one skilled in the art at the time of the
invention to modify Yamada, such that temporal drift is used, to provide means to
measure/monitor temporal drift and incorporate it into the channel operability

THIS ACTION IS MADE FINAL Applicant is reminded of the extension of
time policy as set forth in 37 CFR 1 . 1 36(a).

A shortened statutory period for reply to this final action is set to expire
THREE MONTHS from the mailing date of this action. In the event a first reply is
filed within TWO MONTHS of the mailing date of this final action and the advisory
action is not mailed until after the end of the THREE-MONTH shortened statutory
period, then the shortened statutory period will expire on the date the advisory
action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be
calculated from the mailing date of the advisory action. In no event, however, will
the statutory period for reply expire later than SIX MONTHS from the mailing
date of this final action.

Any inquiry concerning this communication or earlier communications from
the examiner should be directed to Stephen M. D'Agosta whose telephone
number is 703-306-5426. The examiner can normally be reached on M-F, Sam
to 5pm.

If attempts to reach the examiner by telephone are unsuccessful, the
examiner's supervisor, Bill Trost can be reached on 703-308-5318. The fax
phone number for the organization where this application or proceeding is
assigned is 703-872-9306.

Information regarding the status of an application may be obtained from
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system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-
free).

Stephen D'Agosta
PRIMARY EXAMINER
3-1-05

history.

Conclusion